Last month, the Delhi High Court granted a John Doe order to Sandisk Corporation, the world’s largest provider of flash memory storage devices by the name of ‘SanDisk’. The plaintiff Sandisk Corporation had filed the suit (I.A.20550/2014) for permanent injunction restraining infringement of trademark, copyright, passing off, rendition of accounts of profits, damages, delivery up, etc. The order was passed by Justice G.S. Sistani on 17th October, 2014.
The plaintiff, Sandisk Corporation, had submitted that certain unknown persons were initially selling counterfeit products with the identical name SanDisk, SanDisk Logo and with an identical packaging from Daryaganj, Old Delhi, and after passing of injunction orders they had changed their modus operandi and had started selling counterfeit products through makeshift Sunday markets at Daryaganj, Old Delhi.
Sandisk Corporation had further submitted that during investigation, it had been found that large numbers of stalls were being set up all across the pavements at Daryaganj to sell the counterfeit SanDisk Micro SD Memory Cards with an identical packaging, as that of the plaintiff. As evidence of this, the plaintiffs had submitted photographs which showed counterfeit goods being sold in large quantities in Daryaganj market.
The plaintiffs contended that it was impossible to identify the names of such persons as they were primarily fly-by night operators, who sold counterfeit products and thereafter vanished to avoid the orders of injunction. The plaintiffs stated, “common unwary customers are being misled on account of the illegal activities of such persons, who are selling counterfeit products with the mark of the plaintiff SanDisk, when it is found that the product is not only substandard but in fact cannot put to any use, which tarnishes the reputation and image of the plaintiff.”
On the aforementioned grounds, the plaintiffs prayed for grant of ex parte ad interim injunction under Order XXXIX, Rules 1 & 2 of CPC, “it is submitted that Counsel seeks injunction under the inherited powers of this Court to evolve a fair and reasonable procedure to meet the exigencies as has been done in the past and what is known as John Doe practice.”
Granting the John Doe order, Justice Sistani observed, “I am satisfied that it is a fit case for grant of ex parte ad interim injunction. In case an injunction is not granted serious prejudice would be caused to the rights of the plaintiff. Accordingly, the unnamed and undisclosed persons arrayed as ‘John Does’ are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in counterfeit products, which are identical to the products bearing the plaintiff’s Trade mark SanDisk and logo marks and the ‘Red Frame’ logo, with identical product packaging, product get-up colour scheme, layout, overall look and feel as that being used by the plaintiff.”
Sandisk Corporation had also prayed for appointment of three Local Commissioners under Order XXVI Rule 9 of CPC to visit the make-shift locations of such unnamed and undisclosed persons at Daryaganj market or such other place. The Court granted relief to the plaintiff and appointed three Local Commissioners to “seize and take into possession the counterfeit memory cards bearing the plaintiff’s SanDisk word and logo marks and/or the Red Frame logo with or without the product packaging, and also make a list of particulars of those persons with their identification proof, if possible, found in possession of such counterfeit products.”
The order is the latest in the series of John Doe orders which are being passed by Indian courts with the most recent John Doe order being granted to the producers of Bollywood film, ‘Happy New Year’.
